An Abdication of Collective Responsibility by the Federal Circuit

By Burman York (Bud) Mathis III
September 28, 2018

The Court that has been charged to make sense of it all, the Federal Circuit, seems to be abdicating its collective responsibility by refusing to settle on a repeatable test that results in predictable outcomes.

Over the last four years, various decisions from the Federal Circuit related to patent eligibility under 35 U. S. C. § 101 have not only failed to provide guidance to inventors and industry but have walked the patent system in the wrong direction when no consistency can be found at all.  No one can understand the existing body of case law.  Not examiners, not Administrative Patent Judges, not the district courts and not the community of patent lawyers.

There is no single decision from the Federal Circuit that is not contradicted by another decision.

For example, in Electric Power Group v. Alstom, 830 F.3d 1350 (2016) and SAP America v. Investpic the Federal Circuit announced a categorical rule that a claim that did nothing more than gather data, process data and display data cannot be patent eligible, which cannot be reconciled with no less than a half-dozen other decisions.

Did any judge or clerk associated with Electric Power Group or Investpic read Bilski, which expressly states that “categrical rule[s] denying patent protection for ‘inventions in areas not contemplated by Congress . . . would frustrate the purposes of the patent law.’” Bilski v. Kappos, 561 U. S. 593, 605 (2010). Or Alice, where even the Supreme Court acknowledged that an overly expansive view of what constitutes an abstract idea would swallow all of patent law because every invention must necessarily begin with an idea.

At the tail-end of the Investpic decision, the Federal Circuit announced that “[a]n innovator who makes such an advance lacks patent protection for the advance itself.  If any such protection is to be found, the innovator must [look to] the law of trade secrets, whose core requirement is that the idea be kept secret from the public.”

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Favoring trade secrets over patents frustrates the fundamental Constitutional purpose of encouraging disclosure. It is by and through disclosure that the great minds of today are capable of standing on the shoulders of those who came before them. It is the disclosure that benefits society and is the Constitutional purpose of a patent system. Burying innovation frustrates that purpose. The Court charged with unifying patent law lecturing innovators that they need to hide their innovations rather than participate in the Constitutional process of applying for a patent is rather unconscionable.

In another recent case, In re Bhagat, the Federal Circuit rubber-stamped a PTAB rejection that entirely wrote out claim limitations and announced that a product-by-process claim was not a process because there was no appropriate “transformation” required by the claim citing Funk Brothers.  However, a mere eight years ago, the Supreme Court announced that there is no known definition of the terms “‘process, art or method’ that would require these terms to be tied to a machine or to transform an article.”  Bilski, 561 U.S. at 603.  In light of this decree from the Supreme Court, did it occur to anyone at the Federal Circuit that the 1952 Patent Act just might have made Funk Brothers moot and inapplicable (or at the very least limited) by adding the word “process” to § 101, and replacing the vague concept of “invention” with § 103?

Has anyone at the Federal Circuit read anything by Giles Sutherland Rich?

In In re Villena, the Federal Circuit abrogated the evidentiary rule it recently adopted in Berkheimer, Aatrix and Exergen while dispensing with the pesky requirement to analyze claims as a whole.  That seems to be violative of the Administrative Procedures Act and is no doubt why the Federal Circuit is taking seriously the request for reconsideration in the case. Indeed, in response to Villena’s combined petition for rehearing and rehearing en banc filed September 7, 2018, the Federal Circuit invited the USPTO to respond, “on or before September 28, 2018.”

The Federal Circuit has often demanded some technical advantage under § 101 when none is required by U.S. patent law. The Federal Circuit has also made § 101 more burdensome, unpredictable and subjective than an obviousness determination under § 103, and § 101 is supposed to be a threshold test that acts to weed out only the most egregious attempts to patent fundamental principles. § 101 was never meant to weed out whole new areas of technology, particularly not nascent technologies. But that is exactly what is happening and the Court that has been charged to make sense of it all, the Federal Circuit, seems to be abdicating its collective responsibility by refusing to settle on a repeatable test that results in predictable outcomes.

Can anyone explain why it took the Federal Circuit nearly six years to acknowledge that determining whether something is “well understood, routine and conventional” is an issue of fact, not law?  It is as if the Federal Circuit has become paralyzed by fear or crippled by an inability to have disparate views harmonized and applied in an even-handed way. Now more than ever the make-up of a Federal Circuit panel matters a great deal. Have the wrong judges assigned and you have no chance. That isn’t what the Federal Circuit was created to do.

How much longer will it take the Federal Circuit to realize that determining whether a particular business practice is or is not a “fundamental economic practice long prevalent in our system of commerce” is an issue of fact, not of law?  Meanwhile we must assume that judges are such experts in business that they just know when something is “a fundamental economic practice long prevalent in our system of commerce” without evidence?

The catastrophe the Federal Circuit has caused for individual inventors and industry is inexcusable.  Such catastrophe was caused not by following the patent law, but by ignoring the very mandate of the Court to harmonize patent laws. With panel make-up dictating outcomes and tests wholly incapable of achieving repeatable results, the Federal Circuit is failing.

The words of Donald W. Banner, one-time Commissioner of Patents and Trademarks, found in the preface of Nonobviosness – the Ultimate Condition of Patentability (page v) are particularly relevant:

“[I]nventors and businessmen will be interested in the patent system only so long as they can reasonably understand the patent laws and rely on their stability.  Indeed, when the government grant of a patent cannot reasonably be relied upon throughout the nation, then the patent system becomes a cruel hoax.  An increase in trade secrecy and a decrease in innovation would be the result.

The prevention of such a result has seldom been more important.  There is no doubt that we must now encourage innovation.  The reliability of patents has an important role to play in achieving that result.  .  .  .  .  While a reliable patent system is not the whole answer, it is, nevertheless, a vitally important part of the answer.”

Commissioner Banner’s preface also criticized the “judicial gloss and creative embellishments which seem periodically to become associated with the rather clear, two-sentence test provided by Section 103[.]” No doubt, Commissioner Banner would be unhappy by today’s “judicial gloss and creative embellishments” associated with the rather clear, one-sentence test of § 101. Of course, his admonition is correct: stakeholders will only be interested in the patent system if the laws are reliable and stable. It has been quite some time since either could be said about U.S. patent law.

The Author

Burman York (Bud) Mathis III

Burman York (Bud) Mathis III is a sole-practitioner in the Washington D.C. area with experience in patent drafting and prosecution, opinion writing, due diligence, litigation and appellate work. Mr. Mathis technical expertise and experience is far-ranging. For example, Mr. Mathis’ experience covers a wide variety of highly-technical subject matter that includes wired and wireless communications (including MIMO, 3G, 3GPP/LTE, D2D and 4G technology), analog and digital electronics, image processing, semiconductor devices and processes, solid-state physics, material science, printers and copiers, projectors, cameras, speech recognition and synthesis, xerography, cryptography, control systems, magnetic and optical disc technologies, fiber optics, MEMS technologies, nanosensors, GPS navigation systems, software, computer networking and business methods.

Warning & Disclaimer: The pages, articles and comments on IPWatchdog.com do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the personal opinion and views of the author and should not be attributed to the author’s employer, clients or the sponsors of IPWatchdog.com. Read more.

Discuss this

There are currently 118 Comments comments. Join the discussion.

  1. Pro Say September 28, 2018 4:15 pm

    Thanks for another great article Bud — how right you are.

    I hope you / Gene will post the PTO’s response once you have it.

  2. concerned September 29, 2018 7:15 am

    Pro Say and “B”:
    Thank you for your on-going assistance with my appeal (currently being drafted by my attorney). I will share a draft with both of you when available.

    Pro Say: My email was undeliverable to you. Here is the PTAB 101 reversal on lack of evidence by the examiner.

    Thomas: Appeal 2017-002949 Application 12/852,224
    PTAB final decision 12852224 May 25, 2018

    Of note: well-understood, routine, and conventional activities previously known to the pertinent industry (not bits and pieces from court cases outside the field of technology)

  3. Pro Say September 29, 2018 11:27 am

    Happy to help a fellow inventor, concerned.

    We’re all in this 101 baloney-battle together.

    Thanks for the 12/852,222 info (don’t know what the e-mail prob is).

  4. B September 29, 2018 11:47 am

    @ Pro Say “I hope you / Gene will post the PTO’s response once you have it.”

    The PTO responded yesterday afternoon. I’ll provide a link later today along with a link to the petition for rehearing.

    Much of the PTO’s argument is an assertion that the CAFC “routinely affirms” the lower courts without citation to record evidence – citing Investpic as an example (note: Investpic is up for rehearing en banc as we speak).

    The PTO’s response is very circular. We don’t need evidence because we don’t need evidence.

    The most laughable bit is an assertion (p. 8) that “[c]ontrary to Villena’s suggestion, neither the non-precedential decision of this Court nor the USPTO Board decision here holds that claims using computers are, per se, patent ineligible.” This is laughable because this isn’t what I argued. I argued that computers and math do not negate patent eligibility. It was the PTO that argued that “this is computers doing what computers do.”

    The PTO’s preemption argument actually appears to favor me, but it also predictably ends with a citation of ariosa v sequenom. No preemption argument is fully addressed and made moot by spewing that garbage decision.

  5. JNG September 29, 2018 1:15 pm

    “demanded some technical advantage under § 101 when none is required by U.S. patent law”

    this is the one that’s driving me most nuts, the Examiners/PTAB cite it all the time whenever a SW case is involved, inventing new ways to narrowly construe precedent like Mcro, Enfish, Amdocs – leaning on ancillary comments in these opinion to restrict/filter patentability to cases based on limited inclusion, rather than limited exclusion of eligible subject matter

  6. B September 29, 2018 1:29 pm

    @ JNG “the Examiners/PTAB cite it all the time whenever a SW case is involved, inventing new ways to narrowly construe precedent like Mcro, Enfish, Amdocs – leaning on ancillary comments in these opinion to restrict/filter patentability to cases based on limited inclusion, rather than limited exclusion of eligible subject matter”

    No one at the CAFC has bothered to actually read s 101 in a long time.

  7. Anon September 29, 2018 2:45 pm

    No one at the CAFC has bothered to actually read s 101 in a long time.

    Why bother when the example set by the Supreme Court is: “make up whatever we want to make up”….?

    (serious question. If statutory law, designated solely as belonging to the Legislative branch is not considered “important enough” by the Supreme Court, why would the CAFC bother (especially given how badly the CAFC has been browbeaten by the Supreme Court?)

    This goes back to my psychological thought experiment of training simians in a cage with a fire hose. After awhile, the simians do not know why it is not to reach for the hanging bananas, but they sure as anything will pummel any fellow member that dares to do so.

  8. B September 29, 2018 5:58 pm

    Here’s a link to the USPTO’s Opposition: https://drive.google.com/open?id=1xMfU24LazZdVulD-f83cancVn5uftJP8

  9. concerned September 29, 2018 6:00 pm

    JNG @5:

    The USPTO gave me the dance on my McRO argument, which computerized a known manual process on a computer and said computerization was not performable prior to McRO. Also, the USPTO gave me the dance on the Bascom argument after telling me to argue Bascom.

    My “rejected” software process computerized a sought-after solution of 62 years in the making. Nobody was able to computerize my process because nobody could solve the problem since 1956, manual or otherwise. Apparently, I get penalized because nobody had the solution prior before I put it on the computer.

    Also, my solution was rooted in computers because that is where the problem resided (the Social Security Administration’s network of computers). My solution allows the Social Security Administration’s network to perform operationally in a fashion never achieved.

    Difference: The court remanded McRO back. The USPTO apparently insists on the court remand to award patents, have you ever known the USPTO to approve a software process on their own? So why have a USPTO?

  10. B September 29, 2018 6:10 pm

    Here’s a copy of the Petition for Rehearing: https://drive.google.com/file/d/1UYz2tCx8SN1SRzPZt5Wdd7jmLbYlS7ls/view

  11. Pro Say September 29, 2018 7:34 pm

    Thanks for the briefs B.

    Best wishes for a long overdue and well-deserved success.

    In just a minute I’m going to e-mail you what I also gave concerned for his PTAB appeal. Perhaps something you could use.

  12. B September 29, 2018 8:15 pm

    @ Pro Say “Best wishes for a long overdue and well-deserved success.”

    I’ve won nothing yet.

    My main issue: Years ago I told my clients that the USPTO actually needed evidence to determine whether something was well-understood, routine and conventional, and that evidence was necessary to make a finding that a particular business method was long-known, widely-used etc.

    I had my bee-hind handed to me in 2016 by Taranto, Hughes and Reyna – all of whom were convinced they knew different. On petition for rehearing en banc, it was clear that not a single CAFC judge was willing to stand up to the idea that evidence was necessary for any of it. It took the CAFC another 1.5 years before three judges felt differently, and it appears (at this moment) that the CAFC is still undecided on the need for objective evidence on the record despite the Berkheimer and Aatrix decisions.

    Now the CAFC continues to spew nonsense about what is an “inventive concept” when they have no clue what the word means. Can you name a case where the CAFC defined “inventive concept?”

    My clients stuck with me probably because they know I’m outraged — simply outraged at the asinine treatment they’ve been given by the USPTO and the CAFC.

    My various articles are a side-effect of my legal research. If I can get more people similarly interested and educated, then something might get done.

    The really, really stupid part is that all this nonsense isn’t new, and Congress already acted (1952) to address every issue we in the patent community are dealing with today! What good is another legislative fix when the courts aren’t reading the statutes anyway?

    Here’s my best fix for s 101: “Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title, and dammit we mean it!

  13. Night Writer September 30, 2018 7:58 am

    Again, though, most of the judges now on the CAFC are Google judges. I think the FBI should investigate how these appointments were made and I think it is likely that pledges were solicited by the Obama administration to “get the patent system under control’ before the appointments.

    The fact is that we have a really low bunch of people on the CAFC. There are couple that are OK, but the Google judges were selected for their willingness to burn the patent system despite our laws.

  14. concerned September 30, 2018 8:26 am

    B:
    I agree that another legislative fix will not work.

    Your suggested fix of “Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title, and we mean it!” would just be followed by “The USPTO and courts will determine who gets patents, and we mean it!”

    I agree with Anon posts from another thread that SCOTUS et. al. needs to be removed from the patent process. For example, I personally have no problem putting my patent application in front of a jury of my peers. Let the USPTO explain to them why words are added to the law, why their official memos are discarded, and why the evidence does not matter in reaching the truth.

    And sure, the legal beagles would politely explain to common folks on the jury why their opinions matter over Congress and that the legal beagles are needed to save common folks from themselves. Yet, I sure common folks would politely counter that the legal beagles, that do not honor the basic components of “rule of law”, need society to save the non-compliant legal beagles from themselves, and we mean it!

  15. litig8or October 1, 2018 1:38 pm

    if you read the claims in each of these “abdication” cases, you see immediately that the Court got it right.

    Claim 1 from SAP from Investpic:

    1. A method for calculating, analyzing and displaying investment data comprising the steps of:

    (a) selecting a sample space, wherein the sample space includes at least one investment data sample;

    (b) generating a distribution function using a re-sampled statistical method and a bias parameter, wherein the bias parameter determines a degree of randomness in a resampling process; and,

    (c) generating a plot of the distribution function.

  16. Gene Quinn October 1, 2018 1:47 pm

    litig8or-

    As you know, or should know, you can’t just read the claims. You have to read the specification and the file history. Did you do that?

  17. litig8or October 1, 2018 1:53 pm

    No I didn’t read the spec or file history, but I did read the Court’s opinion. Something in the spec that is not claimed can’t save you at Alice Step Two anyway.

  18. Anon October 1, 2018 2:08 pm

    I have to chuckle at the return of “litig8tor” who, as I recall, in his/her last round of commenting shared enough to question whether that person had any experience at all as an attorney.

    As such, any notion of “the court got it right” is rather devoid of anything remotely being convincing — and speaks more to the notion that litig8tor agrees with the Ends reached.

    Less of that is needed at this point.

  19. litig8or October 1, 2018 2:41 pm

    @Anon, do you think that the claim I quoted above is directed to an abstract idea under Alice? If not, why not? And if so, does it pass Alice Step Two. If so, why? I would have an open mind if you respond to this on the merits but your ad hominem attack doesn’t address my point. You are entitled to your own opinion but why do you always have to get personal?

  20. B October 1, 2018 2:57 pm

    @ litig8or “if you read the claims in each of these “abdication” cases, you see immediately that the Court got it right.”

    “No I didn’t read the spec or file history, but I did read the Court’s opinion.”

    You obviously didn’t read the opinion, and I’m calling you out on this. Investpic was decided based on the idea that software per se isn’t patent-eligible. Taranto said that there could be no possible addition that saved the claim under step 2.

    Shame on you. Seriously, shame on you. it’s people like you that screw the system up

  21. Gene Quinn October 1, 2018 2:58 pm

    litig8or-

    OK. Now I know you are an actual attorney and a litigator. Litigators just don’t understand patent law.

    You say: “Something in the spec that is not claimed can’t save you…”

    That is absolutely wrong. You really should study up on patent law. Patent law basics: to interpret a claim you MUST review the claim, the specification and the entire file history. For a cite try the U.S. Supreme Court in Markman.

    Nice try, but your lack of knowledge shines through.

  22. B October 1, 2018 3:07 pm

    @ litig8tor “You are entitled to your own opinion but why do you always have to get personal?”

    I think anon does get personal sometimes, but not in this case. I question whether you have experience as a litigator. Heck, I’m not convinced you have a law degree.

    I wrote an amicus for Investpic because the decision was so retarded. I was furious that Taranto deliberately misrepresented McRO.

    The Federal Circuit to date has abdicated collective responsibility, but Taranto has abdicated all personal responsibility for his own opinions.

  23. litig8or October 1, 2018 3:11 pm

    @Gene

    See Berkheimer v. HP, 881 F.3d 1360, 1369 (Fed. Cir. 2008) (“The parties dispute whether these improvements to computer functionality are captured in the claims. See Appellant Br. at 42; Appellee Br. at 39-40, 43-44. We conclude that claim 1 does not recite an inventive concept sufficient to transform the abstract idea into a patent eligible application. Claim 1 recites a method of archiving including parsing data, analyzing and comparing the data to previously stored data, and presenting the data for reconciliation when there is a variance. It does not include limitations which incorporate eliminating redundancy of stored object structures or effecting a one-to-many change of linked documents within an archive. It does not even require the storage of data after it is presented for manual reconciliation. Thus, it does not recite any of the purportedly unconventional activities disclosed in the specification. “).

  24. litig8or October 1, 2018 3:20 pm

    @Burman,

    If that is REALLY you posting as “B” above, (as you wrote the amicus mentioned above), you should probably delete your post above calling a judicial decision “retarded.” That word in general is unbecoming and if directed at a court by an attorney is doubly regrettable.

  25. B October 1, 2018 3:35 pm

    @ litig8or “Claim 1 recites a method of archiving including parsing data . . . It does not include limitations which incorporate eliminating redundancy.”

    Funny, there’s no requirement under s101 for an “improvement.” In fact, requiring an improvement writes out half the text of s101. What shocks me is how many “litigators” and CAFC judges to date have failed to address statutory text when addressing a s101 issue.

    Just a little story here. Last April Judge Hughes asked me a question as to whether the CAFC had ever allowed a claim under Alice/Mayo that did nothing but receive data, process data and display data. It was a serious question, not a rhetorical one. This from the man who penned Enfish.

    My thoughts: CAFC judges are so overwhelmed by their docket that they’re leaving too much to the clerks, who are mostly recent law-school grads rather than experienced patent attorneys.

    Hey, Jimmie Reyna is hiring: https://www.lawcrossing.com/job/id-80a40873f271ae591b1dfa85ade0947c?utm_campaign=google_jobs_apply&utm_source=google_jobs_apply&utm_medium=organic

  26. B October 1, 2018 3:47 pm

    @ litag8or “If that is REALLY you posting as ‘B’ above, (as you wrote the amicus mentioned above), you should probably delete your post above calling a judicial decision ‘retarded.'”

    I make no apologies and no retractions. “Retarded” is a far better word than what is in my head given the circumstances. McRO did not improve a display, and Taranto failed to notice that a display was never recited in any claim or that no party in McRO ever asserted that a display was improved. Taranto made it up out of whole cloth, which is doubly-inexcusable given he signed onto the McRO decision.

    If an opposing attorney did that during litigation, I’d file for Rule 11(b) sanctions and likely win. Of course, if you were a litigator, you”d know this.

    Spare me your indignation.

    The CAFC has run roughshod over the patent system without apology to the detriment of my clients and tens of thousands of other inventors and businesses. I’m calling them out using detailed arguments.

  27. Anon October 1, 2018 4:30 pm

    One of my favorite quotes:

    “Words,” wrote John Maynard Keynes, “ought to be a little wild, for they are the assault of thoughts on the unthinking.”

    If one is going to post without thinking, then there should be a little sting forthcoming.

  28. Gene Quinn October 1, 2018 4:32 pm

    litig8or-

    I’m happy to go down this path with you and demonstrate to everyone here that you don’t know what you are talking about, and merely parroting out of context things you think to be true. But please remember before I embarrass you to the point where you will need to change your moniker, I warned you.

    Your understanding is shallow, and you pick a random pice of Berkheimer that has nothing to do with your outrageously incorrect assertion to pretend that the specification is not relevant to interpreting a claim. In fact, consideration of the specification and the prosecution history are mandatory when interpreting a claim. If a PTAB judge or district court judge made the statement you did and said they refused to consult the specification it would be reversible error. In fact, not only is the specification and prosecution history relevant, but so too are extrinsic pieces of evidence from dictionaries, treatises and from experts. See Phillips v. AWH. Here is the link:

    https://www.leagle.com/decision/20051718415f3d130311557

    So, when you say you’ve read the claims and come to some determination, your determination is legally insufficient as wholly inadequate since you admitted to not considering critical pieces that are necessary to actually know what a claims means.

    So all you are proving is you know nothing about what you are talking about, and that you probably really are a litigator. God help your clients if you are an attorney. I sure hope you have paid up malpractice insurance because you don’t know or understand the law.

  29. litig8or October 1, 2018 6:53 pm

    Hi Gene,

    I never said (and don’t think) that the specification is not relevant to claim construction. Rather, I stated – correctly – that at Alice Step Two anything in the specification that allegedly saves the claim (i.e., by providing “something more” than the abstract idea identified at Step One) does not count unless it is actually CLAIMED. That is an accurate statement of the law, as I am sure you would agree. While it is true that I personally did not read the specification in the case I cited above, I am 100% sure that the Court did. I don’t have the time to re-litigate every case that has been decided. Instead, in the interest of time, I looked up the claims in the patent. They SCREAM abstract idea. The Court agreed.

  30. B October 1, 2018 7:56 pm

    @ litig8or “Rather, I stated – correctly – that at Alice Step Two anything in the specification that allegedly saves the claim (i.e., by providing “something more” than the abstract idea identified at Step One) does not count unless it is actually CLAIMED.”

    Define “something more.” In your vast experience as a litigator this should be easy.

  31. B October 1, 2018 8:01 pm

    @litig8or “I looked up the claims in the patent. They SCREAM abstract idea.”

    And you can tell this without evidence? What criteria are you using? Are you sure you’re not a judge?

  32. Night Writer October 1, 2018 8:02 pm

    >>For example, in Electric Power Group v. Alstom, 830 F.3d 1350 (2016) and SAP America v. Investpic the Federal Circuit announced a categorical rule that a claim that did nothing more than gather data, process data and display data cannot be patent eligible, which cannot be reconciled with no less than a half-dozen other decisions.

    Funny that this is exactly what the judges do for a living. The collect data, process the data, and display the data. So any computer that could replace them would be abstract and not eligible for patentability. Now how could that be? A machine that replaces a human worker per se not eligible for patentability. Sounds like those judges have no idea what they are talking about.

    litig8or >does not count unless it is actually CLAIMED.

    I think you are don’t know what that means. What is “claimed” cannot be fully determined without consulting the specification.

  33. litig8or October 1, 2018 11:40 pm

    @B – there’s many cases explaining Alice Step Two- you act like you’ve never heard of it. For example, using a computer to merely “apply” an abstract idea is not sufficient while an otherwise abstract idea that improves performance of a computer would be enough. It’s not nearly as impossible to understand as you make it out to be.

  34. B October 2, 2018 12:17 am

    @ litig8or “there’s many cases explaining Alice Step Two- you act like you’ve never heard of it. For example, using a computer to merely ‘apply’ an abstract idea is not sufficient while an otherwise abstract idea that improves performance of a computer would be enough. It’s not nearly as impossible to understand as you make it out to be.”

    Obviously, you understand nothing. You parrot nonsense without bothering to think for yourself. You assume the claim in Investpic is “abstract” just because. Yep, you’re a judge.

    Also, point to me where in s101 an improvement is required, and do so without making half of s101 superfluous.

    Take all the time you need.

  35. concerned October 2, 2018 5:07 am

    Not a litigator, not an attorney and not a judge. I see no evidence in law that the improvement must be, and only be, an improvement in the computer itself. Judges have added their opinions to the law based on court cases and their bias. In addition, courts have steadfastly stated concrete steps that solve a problem, not just a computer problem, are patentable.

    CLS Bank v. Alice at 134 S. Ct. at 2355, 2357
    Mayo 132 S. Ct at 1294
    EPG Appellate Court: Appeals Ct 2015-1778, pg. 11

    The USPTO found bits and pieces of court cases outside my field of technology to reject my application, while ignoring other quotes within those same major court cases that would support my application.

    It appears USPTO, Director Iancu in upcoming guidelines may be thinking along the lines of practical application of the claims, and not just practical application to the improvement of the computer itself. To suggest that claims using a computer, generic or otherwise, must improve the functionality of the computer is an illogical limitation regardless of what problem was solved by the claims.

    The bias toward software claims and their added technical computer improvement stipulation was either completely ignorant or a sell out to Silicon Valley. Either way, those views are not supported in laws passed by Congress

  36. Night Writer October 2, 2018 8:50 am

    @33 litig8or >using a computer to merely “apply” an abstract idea is not sufficient

    It is incredible that judges do actually write stuff like this. We need to disband the CAFC and reform it. What is written above is gibberish. You may as well write, “I don’t like your stinking claims so I am going to invalidate them.”

  37. litig8or October 2, 2018 9:00 am

    I tried to engage in some discussion. But this blog is filled with nonsense. So good riddance, bitter patent prosecution bottom feeders.

  38. B October 2, 2018 10:24 am

    @ litig8or “I tried to engage in some discussion. But this blog is filled with nonsense.”

    Sir – your knowledge of s101 is frightfully poor. You make statements and cannot back them with law. I requested a most basic thing: “point to me where in s101 an improvement is required, and do so without making half of s101 superfluous.”

    Your assumption that the claim in Investpic is “abstract” is conclusory and without evidence or legal argument.

    You cannot address the most basic issues. You don’t engage in discussion.

  39. B October 2, 2018 10:40 am

    @ concerned “I see no evidence in law that the improvement must be, and only be, an improvement in the computer itself.”

    35 USC s101 states “Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor . . . .”

    Requiring an improvement to a computer or anything else writes out the bolded section. Further, the CAFC ignores any improvement they see fit – even if it be to a computer itself.

    Yes, I got on litig8or’s tail, because he’s so far behind the game while believing the opposite.

  40. Concerned October 2, 2018 12:55 pm

    Litig8or:

    You are welcomed back when you quote law U.S. 35, s101, s102, s103 etc.

    Personally I am not interested in opinions as I get enough opinions from court cases that added nonexistent words to those laws.

  41. litig8or October 2, 2018 1:08 pm

    Concerned-

    The Mayo, Alice etc cases are about judicial EXCEPTIONS to 35 USC 101. So quoting the statute isn’t all that illuminating. Not sure why you direct anger at me, I am not on the Supreme Court. People on this thread that say the loudest that I “don’t know the law” are doing some major Freudian projection. They just don’t like or accept the law. See comments like abolishing the Federal Circuit.

    Not that it matters but I have advocated more than one interpretation of first impression of several different statutes in the Patent Act. In the first instance the district court agreed with my novel intepretion and was affirmed unanimously. (It didn’t have to do with patent eligibility). My other novel argument is before a district court now and we shall see what happens. Point is, I fully understand how to interpret legislation. So does the Supreme Couet.

  42. Anon October 2, 2018 1:26 pm

    litig8or is following the exact same line of “reasoning” as he did before.

    It’s “funny” how he took umbrage at my first post (even as that post was entirely accurate), and then he turns around and launches into a “So good riddance, bitter patent prosecution bottom feeders.” without bothering to understand just why some of us may be bitter.

    The bitterness comes from the sense of Justice being mashed by the Courts jamming their fingers into the wax nose of 35 USC 101.

    The bitterness comes from those of us who well understand how patent law, being a specific law set by the Constitution as to which branch is authorized to write that law, has been “broken.” Those of us who understand law, understand innovation and desire that the Ends (whatever they may be) should only be reached by proper Means, are deservedly bitter.

    The larger issue my friend, litig8or, is that the scoreboard IS broken. You (once again) appear and merely want to read the score from the broken scoreboard, and wonder why people are upset with you reading a broken score.

    As I first interacted with you to explain this very point previously, you simply either do not care or cannot be bothered with any sense of critical thinking as to that larger issue.

    As I stated above at 18: Less of that is needed at this point.

  43. B October 2, 2018 1:37 pm

    @ litig8or

    “The Mayo, Alice etc cases are about judicial EXCEPTIONS to 35 USC 101. So quoting the statute isn’t all that illuminating.”

    First, the sole criteria to the exceptions to s101 is preemption of an abstract idea.

    Second, for a business method to be “abstract,” the business method must be a “fundamental economic practice long prevalent in our system of commerce” according to Alice Corp.

    There was no finding, or even an assertion, that Investpic’s claims as a whole, ordered combination were directed to a “fundamental economic practice long prevalent in our system of commerce.”

    To the contrary, in SAP v Investpic Judge Taranto holds that software running on a computer per se is not patent eligible despite any advantage. That’s a “categorical rule,” which Bilski said was improper under s101.

    The SCOTUS also cannot rewrite statutory law to impose biases they think are more proper, but more important to our discussion is: what criteria did you use to proclaim the Investpic claim ‘abstract’

    This should be easy given the claim SCREAMS abstract, right?

  44. Concerned October 2, 2018 1:40 pm

    Litig8or:

    Do you believe judges have the legal right to override the exact words of Congress with their judicial exceptions? Are judges allowed to legislate from the bench?

  45. Pro Say October 2, 2018 1:56 pm

    Tough to not be bitter when a dist ct judge first accepts an infringer’s Alice-barred MULTIPLE AND VARIED alleged abstract ideas, then adds in a few of her own, then says the something more isn’t something-more-enough, then the CAFC issues a “see no evil,” head-in-the-sand Rule 36, then the PTO first accepts a 101-traversal for the con, then reverses it, forcing an appeal to the death-squad PTAB …

    So, yea, just a touch of “bitter.”

  46. B October 2, 2018 2:14 pm

    @ Pro Say “ then says the something more isn’t something-more-enough…”

    The entire patent community is still waiting, six years after Mayo, for the CAFC to announce what “something more” is. Same with “inventive concept.”

  47. Alexander Ocher October 2, 2018 7:39 pm

    Dear B,

    In another thread, you wrote: “I called the Virginia bar and, based on their backing and advice, forced those POSs to retract their lie.”

    Have you ever tried to report a patent examiner to the bar? I am waiting for the Examiner’s answer to my appeal brief and, if the answer merely repeats the Final, I want to report the Primary to the bar (the Examiner is not a lawyer, but the Primary is). I stated this in my brief and I am planning to follow through on a person that disagreed with a direct quote from Mayo and stated that Enfish only applies to the specific case of self-directed table.

    Unfortunately, I was not able to find your email address.

    Best Regards,
    -Alex

  48. Alexander Ocher October 2, 2018 7:48 pm

    Dear litig8or,

    Step 2B is very easy: if a claim monopolizes/preempts the abstract idea, either by itself or using a computer, it is not eligible; otherwise it is patent-eligible. The former “would risk disproportionately tying up the use of the underlying” ideas, and are therefore ineligible for patent protection. The latter pose no comparable risk of pre-emption, and therefore remain eligible for the monopoly granted under our patent laws.

    To use direct quotes from Alice:

    We have described the concern that drives this exclusionary principle as one of pre-emption. See, e.g., Bilski, supra, at 611–612 (upholding the patent “would pre-empt use of this approach in all fields, and would effectively grant a monopoly over an abstract idea”).

    A claim that recites an abstract idea must include “additional features” to ensure “that the [claim] is more than a drafting effort designed to monopolize the [abstract idea].”

    I hope you’d agree with the Supreme Court.

    Best Regards,
    -Alex

  49. B October 2, 2018 8:10 pm

    @Alexander Ocher “Have you ever tried to report a patent examiner to the bar?”

    APJs are all attorneys, but reporting an examiner who is a barred attorney? No.

    I doubt that, based on your description, that you’d get action by a bar. My case was about an incompetent APJ who thought she could lie and get away with it. Many of the business method APJs lack character. Her lie could have got me sanctioned and possibly disbarred. I had no choice but to fight it.

    “Enfish only applies to the specific case of self-directed table.” Heck, Judge Hughes might agree with that and he wrote Enfish.

    Wait until the Investpic rehearing en banc decision comes out. Should be within two months and it should address your issue.

  50. AlexO October 3, 2018 12:35 am

    Thank you, B.

    I’m planning to raise the question to the bar anyway, since I have nothing to lose. I was just curious whether somebody has tried this before.

    Enfish … how about Alice and Ariosa? Hopefully, they also only apply to their respective cases 🙂

    I did write a nice letter below to the USPTO boss. Got a reply saying that it was forwarded to TC 3600 (great unit, btw!) and somebody will contact me.

    Best Regards,
    -Alex

    “Dear Director,

    It is with great interest that I read your speech at the IPBC Global Conference, especially the part about U.S. patent no. 200,521. You presented a generic argument explaining how that invention fails the Mayo/Alice test, quickly adding ” Now, I am saying much of this in jest, of course.” However, there is nothing that prevents examiners to issue such a rejection in all seriousness, as there was no attempt made to put checks and bounds in place to avoid applying patent eligibility framework in such manner.

    Which brings me to my application 14/027,820. While replying to an Office Action, I used a well-known reasoning from Mayo to explain that my case is similar to Diehr because “It nowhere suggested that all these steps, or at least the combination of those steps, were in context obvious, already in use, or purely conventional.”, specifically pointing out the source of my quote. Yet the Examiner stated that this is not an appropriate way to determine patent eligibility; here is a direct citation from the last Office Action: ” Novelty (already in use) is not a factor when evaluating claims under 101.” I was quite shocked, especially because my source was not an insignificant Supreme Court decision (if there is such thing), but one of the two Supreme Court’s landmark decisions that form the basis of all patent eligibility jurisprudence. The second one is, of course, Alice, but the Examiner disagreed with it as well while applying the second part of the test (“significantly more”): “Preemption is a completely different measurement of patent eligibility and the Applicant is cautioned to not confuse the two.”

    Decisions from the US Court of Appeals for the Federal Circuit did not fare any better, for example, here’s what the Examiner wrote about Enfish: “while the Enfish decision has provided an exemplary concept deemed as patent eligible, the analysis and subsequent decision is specific to only that case” and “Finally, only the specific facts in Enfish resulted in a decision of patent eligibility.” Of course, Enfish was a precedential decision, so much so that it warranted its own memorandum by the USPTO and it is regularly cited in other CAFC decisions.

    How about Federal Laws? The Examiner rather quickly disposed of those as well: for example, my reference to 5 USC 706 (Administrative Procedure Act) and a request to provide evidentiary support were dismissed, with the Examiner stating that “The Examiner is not required to proffer additional extrinsic evidence in support of the finding. ”

    Some statements made by the Examiner could have been a joke if not for them to appear in the Final Office Action: for example, the assertion that purchasing a discounted gift card from a merchant by a human being is a good example of “purely mental process” “that can be performed by human thought alone” (I did not know the Office employs Marvel superheroes). And other statements referred to claim limitations that were not even claimed! However, my absolute favorite was the statement in the Final (!) Office Action: “Examiner needs more information to properly address this argument.”, explicitly admitting that my argument was not addressed properly while maintain the finality of the Action.

    So, while I understand that you wanted to draw attention to the ambiguity of the two-part eligibility test in your speech, I want to draw YOUR attention to the fact that examiners often simply disregard statutory and case law as there is no one to make them accountable: this lack of accountability undermines a sense of responsibility as every examiner knows that a wrongly rejected application will not have any negative consequences for them. I am not an IP professional, but I wonder if there is a way to make examiners accountable for their actions, such as blatant disregard for laws in my examples above?

    All I want is the fair hearing of my case according to all applicable statutory laws and court cases. And, as English is not my native language, I apologize for any mistakes in my letter.”

  51. concerned October 3, 2018 4:10 am

    Alex O.:

    Welcome to the club of disbelief. You seem like an intelligent and fair person. Your fault, like many of us, is trying to apply logic and legal reasoning to a situation that is not what it appears.

    The patent system parallels the sub-prime mortgage scam. A few smart people came up with a financial angle to scam the public. The scam ran its course until it threatened the very existence of our country’s well- being, then the scam had to quit. Of course, deep down everyone would admit that this mortgage business model was a sham, however, certain dishonest groups of people were making money hand over fist. The dishonest people figured: Why stop the music when so much money was to be had at other people’s expense?

    The patent system is no different. A few people successfully marketed the patent troll concept and those people are cleaning up at the expense of inventors. Like the sub-prime mortgage scam, the patent system will go some distance based of the past practices of its legitimate prior situation, then skate a little further because all the money being had by those who manipulated the patent system, but then it will be forced to stop. Does anyone believe that inventors will continue to spend their money and time just to be abused and to feed our ideas to those that can steal our ideas? Would anyone put their money in a bank if bank robbery was legal?

    Alex, I am in the same boat, so I will offer you some advice. Hang in there and hope the madness stops while we are still in the game. Stick to your moral compass, do not compromise yourself. There are only two things people, or the courts, cannot take from you, your name and your integrity. If you lose those two things it is because you gave them away.

    You and I might be a casualty if the situation does not correct fast enough for us, but remember: We may be in the world, we do not have to be of the world. The preceding may be the only by-product of our efforts to serve society.

  52. Night Writer October 3, 2018 10:27 am

    Again, the biggest joke is that according to most of the judges on the CAFC a computer that would replace the judges would be ineligible for patentability.

    There is no way to reconcile that result with the goals of a patent system.

  53. litig8or October 3, 2018 11:17 am

    Night Writer,

    ACTUALLY inventing a computer that can reason like a judge and writing a ridiculous claim on a piece of paper aren’t the same. If someone actually made such a machine of course they can get a patent. But trying to patent this as a method or via a “computer” that you didn’t invent is quite a different thing.

  54. Anon October 3, 2018 11:33 am

    With all due respect, litig8or, you continue to display an inability to grasp the fundamentals here.

    This is not a matter of “inventing a computer”as it is in recognizing that there need be NO “inventing a computer.”

    Instead, what needs to be grasped is the basic notion that software is a “ware,” and as such, is every bit as patent eligible as any other computing “ware” (be it hardware or firmware.

    Your myopia and pre-ordained views on “writing a ridiculous claim on a piece of paper“ coupled with your prior admissions of not bothering with the specification (and your constant refusal to even acknowledge the larger issue of a broken scoreboard) paint you as a rather lazy “the Court must be right, so just deal with it and stop trying to protect this type of innovation” that is simply NOT what is needed now.

    Us “bottom feeders” are more concerned with the bigger issues and longer game of promoting innovation, and yes, that very much includes innovation in the current Kondratiev wave (as postulated by Schumpeter).

  55. litig8or October 3, 2018 11:41 am

    Writing a claim on a piece of paper is not software

  56. AlexO October 3, 2018 11:49 am

    Dear concerned,

    Thank you for your kind words and the advice. I _will_ follow through on my appeal, there is no other choice – too much money, effort, etc. were invested.

    I just want to figure out what are the pain points of USPTO examiners, how to force them to follow the law. I’ve tried before to personally sue the examiner but no law firm would take the case – they said that it is easier to sue the Office than to sue an individual examiner. I’ve also tried to publish an article in a national newspaper, but no one wants to go against the agency – even the lady in WashPost who wrote an expose on examiner playing golf and billing the agency.

    I’ve accepted that examiners/APJs are above the law when they are in the Office – so my idea is to attack them outside the Office. I am not ready yet to accept that “You and I might be a casualty if the situation does not correct fast enough for us”.

    Best Regards,
    -Alex

  57. AlexO October 3, 2018 12:03 pm

    Dear litig8or,

    I’m not a lawyer, so it is great that you gave an example that I can follow as I am a software engineer. Inventing a computer that can reason like a judge is a reality today with RNNs; please check out the example of a neural network producing a nice piece of writing after being fed the works of Shakespeare. Would such a network be patent eligible?

    I am also working with blockchains and wondering what you think about the original Bitcoin paper. It was definitely an improvement in technology, right? Would it be patent eligible?

    Finally, I am a little confused about the phrase “inventing a computer”; what does it mean? Is it a computer that can do some new actions? If so, does it matter whether these new actions are programmed in hardware, firmware or software, to be patent-eligible? I am thinking about IBM’s Watson, that powers many practical applications, from weather to health.

    I am really interested what you think about it. There should be some common way to determine whether or not a claim is patent eligible, otherwise, it all depends on subjective feelings and, therefore, is inconsistent (“eventual consistency” as in some NoSQL systems is not good enough for most practical applications).

    Best Regards,
    -Alex

  58. B October 3, 2018 12:07 pm

    @ litiga8or “Writing a claim on a piece of paper is not software”

    You figured that out all on your own?

  59. litig8or October 3, 2018 12:14 pm

    Alex-

    These are EXCELLENT and hard questions. I won’t answer the hypotheticals but will tell you that some of the things you discuss are patent eligible depending on how the claims are written. A competent patent attorney can draft claims that are eligible. Unfortunately there are lots of bad ones out there.

    This said, the claims in the cases we have been discussing were not even close calls. When someone wants to patent a method for doing something very basic or abstract and tries to claim it as software or being performed on a general purpose “computer” they are likely trying to patent something that the courts will say is ineligible. Again, the huge majority of such claims that get struck down are not close calls. Don’t believe what you read on this blog, which is way outside the mainstream of what is actually the law. One can complain about what they think the law *should* be but unless you like wasting time and money it’s better to know what the law actually *is*. That Anon guy is just a troll. Disregard him.

  60. AlexO October 3, 2018 12:33 pm

    Thank you litig8or. I respect the fact that most/all people here have a better knowledge of the law than I do, so I won’t be commenting on whether or not somebody is a troll.

    Having said that, my concern is not with the law, Courts or this board. My concern is with USPTO that takes my money and then assigns it to the examiners who refuse to back up their allegations with law. You said you won’t answer the hypotheticals so here are my very specific questions:

    1. I used the magic phrase from Mayo explaining that the Diehr was determined patent eligible because “It nowhere suggested that all these steps, or at least the combination of those steps, were in context obvious, already in use, or purely conventional.” The Examiner specifically stated that this is an incorrect way to judge patent eligibility because “Novelty (already in use) is not a factor when evaluating claims under 101.” What would you say here?

    2. The Examiner specifically said that “while the Enfish decision has provided an exemplary concept deemed as patent eligible, the analysis and subsequent decision is specific to only that case”. Do you agree with this assessment – that a precedential decision is specific only to specific facts of the court case and USPTO is free to disregard this guidance while examining applications? What about Alice and Ariosa – are these decisions specific to only those cases?

    Most people here are filing patents for others and getting paid to do that (sorry, I don’t know what you do for living). I am a pro se and paid my own money – don’t you think the examination of my application should not directly contradict they law? (this is regarding your comment that “it’s better to know what the law actually *is*”).

    Best Regards,
    -Alex

  61. Concerned October 3, 2018 12:44 pm

    Litig8or:

    That is laughable asserting we are outside mainstream law. Where are your quotes from law, not the opinions of judges. Law quotes plain and simple. Easy question.

  62. litig8or October 3, 2018 12:44 pm

    Alex,

    It’s hard to answer you without seeing what your claim says. Technically it’s a truism that cases are covering only their precise facts or facts that can’t be distinguished in a material way.

    I’ll just say that if you are getting rejected under 101 you should amend instead of fighting the rejection. Even if you get a patent it is probably worthless if there is a basic eligibility problem.

  63. litig8or October 3, 2018 12:48 pm

    @concerned-

    Try reading Article III of the Constitution which vests “judicial power” with the federal Courts. See also 28 USC 1338 and 1295 – giving jurisdiction of patent issued to federal courts. See also Marbury vs Madison where the first Chief Justice famously held that it is the duty and province of the Courts to interpret legislation. Again, you’re wasting time and money because you don’t understand (or won’t accept) the state of the law as it actually is.

  64. AlexO October 3, 2018 12:58 pm

    Thank you again, litig8or. It is not a claim-specific question: the Examiner stated that the Supreme Court’s criteria of “It nowhere suggested that all these steps, or at least the combination of those steps, were in context obvious, already in use, or purely conventional.” is incorrect. I asked whether an examiner has the authority to disagree on the record with this direct quote from Mayo – it is a procedural question, not relevant to the merits of my claims.

    I don’t understand how you came to conclusion that my claims have a basic eligibility problem.

    Best Regards,
    -Alex

  65. litig8or October 3, 2018 1:02 pm

    Alex,

    I assume that since you’re debating Mayo with an examiner there’s a 101 rejection. If you think examiners are mean wait until you’re up against a federal district court judge and a professional litigator trying to take down your claim. The best play is to work with the examiner to see what in the spec could be claimed to pass muster under 101. If there’s something there, take it and document the agreement in the record. Spinning wheels big time debating Mayo.

  66. AlexO October 3, 2018 1:25 pm

    litig8or,

    I don’t see how it is possible to “work with the examiner to see what in the spec could be claimed to pass muster under 101.”, since I am at the appeal stage. Hopefully, a federal district court judge and a professional litigator would respect the law, unlike USPTO examiners – I am pretty sure that 9 examiners out of 10 would follow district court lead and reject Enfish and McRO using a boilerplate rejection. Perhaps your experience is different.

    Thanks,
    -Alex

  67. litig8or October 3, 2018 1:29 pm

    Alex file a continuation and work with the examiner while the first case is on appeal. It appears to me that you’re banging your head against a wall. But if there’s nothing else in the specification to add to the claim then you have only to hope you win the appeal. If you’re really claiming a method dressed up with some generic computer language the patent is worthless anyway. Do you want a patent just to have a piece of paper or is there a business there (or one that would pay to use your patent)? If it’s just a piece of paper you’re more a part of the problem here.

  68. AlexO October 3, 2018 1:38 pm

    Dear litig8or,

    I understand what you are saying, but I don’t want to keep paying money to USPTO – as I said, it is my money. So I don’t see a point of filing a continuation while pursuing an appeal – I could’ve done RCE instead of appeal.

    In my experience, patent examiners do not follow the law, so it is useless to “work” with them. My claims do not have computer elements, generic or otherwise – the Examiner is trying to find them in specification and then import into the claim. That’s why I honestly believe that USPTO examiners make used car salesmen look good.

    I don’t see how I am “a part of the problem here” just because I’ve filed a patent application and am trying to get it examined based on the statutory and case laws – could you please explain?

    Best Regards,
    -Alex

  69. litig8or October 3, 2018 1:43 pm

    Alex, can you paste in the text of the independent claim?

    Gotta go soon. Good luck

  70. AlexO October 3, 2018 1:47 pm

    Dear litig8or,

    Here it is:

    1. A method for providing discounts comprising the steps of:
    a gift card management system (first entity) performing at least one of the following actions initiated by said first entity to obtain electronically delivered merchant gift cards (payment instruments) directly from at least one merchant or merchant provider (second entity) at least once:
    (a) transferring funds to at least one second entity to purchase said payment instruments directly from said second entity at a price that is determined at least in part based on discounted rate provided by said second entity;
    (b) transferring funds to at least one second entity to purchase said payment instruments directly from said second entity at non-discounted price, followed by transferring a fund amount from said second entity to said first entity wherein at least a portion of the amount transferred to said first entity is at least in part based on discount rates, said transfer to said first entity occurring either before or after a user payment is received by the first entity;
    said second entity agreeing to provide said discounts to said first entity and providing at least one of the following services: providing a brand, authorizing, issuing, and processing for said payment instruments;
    said first entity registering users that agree to commit to a set of rules determined by said first entity without a need to prepay;
    said first entity allocating said payment instruments among said registered users in exchange for receiving a payment from said users by determining their need at least in time and place either automatically or at the user’s request;
    said users performing at least one of the following actions:
    a) redeeming at least a portion of said payment instruments to complete their purchases;
    b) transferring at least a portion of said payment instruments to a specified recipient as a gift.

    Best Regards,
    -Alex

  71. litig8or October 3, 2018 1:51 pm

    Alex, I have little doubt that whatever happens on your appeal, this this claim would be dismissed at the earliest stage of litigation as ineligible if you sue anyone that hires a minimally competent litigator. Nothing personal but this is a business method claim that screams out for a 101 attack

  72. Night Writer October 3, 2018 1:59 pm

    litig8or>>> ACTUALLY inventing a computer that can reason like a judge and writing a ridiculous claim on a piece of paper aren’t the same. If someone actually made such a machine of course they can get a patent. But trying to patent this as a method or via a “computer” that you didn’t invent is quite a different thing.

    What? Are you saying the claim is not enabled? So there is a machine sitting there that takes space, time, and energy and it can perform the functions of a CAFC judge. Are you saying it is impossible to claim?

  73. Night Writer October 3, 2018 2:04 pm

    Frankly litig8or, your dismissive statements serve no purpose.

    You seem to be saying that it is impossible to claim a machine that performs the functions of a CAFC judge. I think that is patently false. Moreover, I think that it is clear from the case law that most of the CAFC judges would find the claims to be abstract.

    There is simply no way to reconcile the positions of the CAFC judges with the goals of patent law. If you respond, please try to within constructs of patent law.

  74. AlexO October 3, 2018 2:20 pm

    Dear litig8or,

    I know. Every claim in every application screams out for a 101 attack, as demonstrated by Andrei Iancu. Do you know any claim that cannot be dismissed by an examiner with a boilerplate 101 rejection as a matter of law without any evidence?

    Thanks,
    -Alex

  75. Night Writer October 3, 2018 3:03 pm

    litig8or >>If someone actually made such a machine of course they can get a patent. But trying to patent this as a method or via a “computer” that you didn’t invent is quite a different thing.

    This is gibberish. You just create your own straw men and then burn them down.

    And, actually, most of the judges at the CAFC would say that you can’t get a patent for such a machine as it is abstract.

  76. Concerned October 3, 2018 3:03 pm

    Litig8or:

    The way the law is actually applied is contrary to what is written and will not, cannot be sustained.

    America now 12th, then 20th? then 30th?. Falling falling falling.

    I am only wasting money if the madness stops too late.

  77. B October 3, 2018 3:30 pm

    @ litig8or “Try reading Article III of the Constitution which vests “judicial power” with the federal Courts. See also 28 USC 1338 and 1295 – giving jurisdiction of patent issued to federal courts.”

    Try reading Article I, section 8, which vests congress, not the courts, to determine the standard of patent-eligibility

  78. anony October 3, 2018 3:32 pm

    Night Writer @ 72

    “a computer that can reason like a judge” is not patent eligible because it is not an improvement to the computer.

    This is both a joke and a commentary on the current state of affairs.

  79. litig8or October 3, 2018 3:48 pm

    B-

    Article I says no such thing. And Congress wrote the stautues I mentioned in any event. Get real d00d

  80. Pro Say October 3, 2018 3:49 pm

    AlexO:

    1. Though I can’t seem to find it now, there used to be an MPEP requirement that an examiner would, upon request, write one claim for a pro se applicant which would be allowable. You can then write other claims from there.

    2. Regardless of whether or not option #1 still exists, however; as litig8or suggests; work with your examiner to arrive at claims which would be allowable. The office’s policy is to help pro ses. Talk with his/her SPE if necessary.

    3. Barring #1 and #2, you need to hire a patent attorney. Now.

    From your claim (which is all I have or have to time to read), you need a professional on your side if you expect to obtain a patent on your invention.

    See if Gene is available to give you a hand, or perhaps he can recommend someone. You can also talk with the law firms and/or patent agents in your same tech field who are successfully getting their clients’ inventions patented. Including those who’ve been successful with your examiner.

  81. B October 3, 2018 4:03 pm

    @ litig8or “Article I says no such thing. And Congress wrote the stautues I mentioned in any event. Get real d00d”

    Hahahaha, you’re hopeless. Seriously, you’re hopeless. Article I outlines the powers of Congress. Article !, section 8, is the part of the Constitution enabling Congress to bestow limited monopolies for the arts and sciences.

  82. AlexO October 3, 2018 4:28 pm

    @Pro Say:

    Thank you. MPEP 707.07(j) states: “When, during the examination of a pro se application it becomes apparent to the examiner that there is patentable subject matter disclosed in the application, the examiner should draft one or more claims for the applicant and indicate in his or her action that such claims would be allowed if incorporated in the application by amendment.” No action is required if the Examiner thinks that the subject matter is not patentable, as do all TC 3600 examiners about all applications.

    I talked to both the Examiner and SPE; they said (in a nutshell) that business methods are not a patentable subject matter. Anyway, it seems to be too late as I filed my Appeal Brief.

    A patent attorney at most can write a reply to the Examiner’s answer. IP professionals generally don’t like to take a case this late in the game. Finally, a patent attorney may have the same result as me: don’t take my word for it, ask B how it is going for his clients. Or ask any attorney how many patents TC 3600 issued for his/her clients.

    Again, thank you for advice. I am going to proceed as follow:
    1. Wait for the Examiner’s answer, write my reply and send the case to appeal.
    2. Contact the bar and have them check whether SPE (her name will be on the reply, together with two others) has acted in a manner expected of a legal professional.
    3. Wait on PTAB decision.
    4. If the decision is not compliant with the law, contact the bar and produce evidence that APJ(s) knowingly disregarded the law.
    5. Consider district court/CAFC route. At that point, I may indeed need a lawyer on my side.

    Who knows what the patent law will look like in 2-3 years it normally takes PTAB to review a case.

    Best Regards,
    -Alex

  83. AlexO October 3, 2018 4:33 pm

    @Pro Say:

    Here’s my SPE:

    https://examiner.ninja/examiners/LONG-FONYA-M

    9 – issued
    134 – abandoned
    42 – pending

    Examiner:
    https://examiner.ninja/examiners/SHORTER-RASHIDA-R

    1 – issued
    5 – abandoned
    39 – pending

    You think Gene would fare better with them? I am sure most of these abandoned applications were filed by patent attorneys with years of experience, who honestly believed that they can pass 101.

    Thanks,
    -Alex

  84. Night Writer October 3, 2018 4:47 pm

    It is funny,though, that you see in litig8or the arrogance and ignorance of the justices and CAFC judges. litig8or thinks it is OK to just make proclamations. Doesn’t matter if it has anything to do with reality or patent law. The way it works in patent law is some ignorant arrogant judge proclaims what reality and patent law are with some new words they made up. litig8or you are a perfect fit for a CAFC judge. Proclaim away. Why not make up some new words too? And a new test to see if the claims are directed to that new word or if the claims are trying to get away with being the new word.

    Have fun.

  85. litig8or October 3, 2018 5:28 pm

    Alex don’t report examiners to the bar. Don’t be like the other clowns that do bush league moves like that. If it is that bad you’ll win the appeal. Stop wasting your time. I’m trying to help you here, you seem like a good guy

  86. litig8or October 3, 2018 5:33 pm

    B

    I know what article 1 says. It certainly doesn’t say anything specific about section 101 nor does it say that laws of Congress (such as section 101 or any other part of that Patent Act for that matter) cannot be interpreted by Article 3 judges. I hope this helps; but with you it seems hope is lost.

  87. AlexO October 3, 2018 5:59 pm

    Thank you litig8or.

    Best regards,
    -Alex

  88. Anon October 3, 2018 6:00 pm

    Rewriting is not interpretation,

    The scoreboard is broken.

    I am curious though, litig8or, what state are you a member of a bar of? Are you familiar with your sworn oath? You seem to have an unhealthy feality to the judicial branch (and seem unable to recognize the relative position of that branch to the Constitution).

  89. Concerned October 3, 2018 6:01 pm

    Litig8or:

    Interpreting law and adding words like SCOTUS did to 101 are two different matters.

    If Congress wants those words added to 101, so be it. That action removes my complaint.

    Until then, judges should just interpret the words as they currently read. Leave their opinions out of it.

  90. Anon October 3, 2018 6:04 pm

    It should be abundantly clear that litig8or has never prosecuted a single patent in his/her life.

  91. Night Writer October 3, 2018 6:48 pm

    @83 AlexO

    Those are some ugly numbers. The reality is that they are just implementing the polices that Lee wanted. But it is crazy. The 101 rejections are just nonsense.

  92. AlexO October 3, 2018 7:25 pm

    @Night Writer:

    Instruction for a USPTO examiner:

    Step 1: Take care of independent claims:
    “Claims 1-XX are rejected under 35 U.S.C. § 101 because the claimed invention is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more.

    9. Independent claims 1 and YY are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more. Independent claims 1 and YY are directed to the abstract idea of . The claim(s) do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional computer elements, which are recited at a high level of generality, provide conventional computer functions that do not add meaningful limits to practicing the abstract idea.”
    Please don’t be discouraged if the claims do not recite any computer elements – just make sure YY is correct.

    Step 2. Don’t forget to address that the claim needs to be addressed as a whole in step 2B:
    “The additional elements do not amount to significantly more than the above-identified judicial exception (the abstract idea). Looking at the limitations as an ordered combination adds nothing that is not already present when looking at the elements taken individually. There is no indication that the combination of elements improves the functioning of a computer or improves any other technology. Their collective functions merely provide conventional computer implementation.” This one is easy – no customization, just copy and paste.

    Step 3. Take care of dependent claims:
    “Dependent claims 2-BB and CC simply append routine and conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception (e.g. claim an abstract idea requiring no more than a generic computer to perform generic computer functions that are well understood, routine and conventional activities previously known to the industry. The additional elements of the claim serve merely to limit the use of the abstract idea to a particular environment – that being a computer environment. Limitations that link the use of a judicial exception to a particular technological environment or field of use do not qualify as “significantly more,” and do not transform the judicial exception into patent-eligible subject matter.” Don’t forget that a 101 analysis is performed as a matter of law – conveniently means that no evidence is required.

    Step 4. Just in case it was not clear that you are not going to allow the claims, add the following line:
    “Claims 1-XX are therefore not drawn to eligible subject matter as they are directed to an abstract idea without significantly more.”

    Step 5. You are done. Play golf but don’t forget that these are billable hours.

  93. Concerned October 3, 2018 8:11 pm

    Nightwrighter @91

    Michelle Lee, Deputy General Counsel and Head of Patents at Google. Then becomes Director, USPTO.

    Those Lee policies? Thank you Google, may I have another 101 rejection please.

  94. B October 3, 2018 9:19 pm

    @ litig8or “
    I know what article 1 says. It certainly doesn’t say anything specific about section 101 nor does it say that laws of Congress (such as section 101 or any other part of that Patent Act for that matter) cannot be interpreted by Article 3 judges.”

    I’m certain you never graduated law school. The gaps in your knowledge are too great.

    Maybe you’re an examiner from 3600 who, before you set upon destroying perfectly good patent claims with your nonsense, was assigned to feminine products and fart filters.

  95. B October 3, 2018 9:22 pm

    @anon “It should be abundantly clear that litig8or has never prosecuted a single patent in his/her life.”

    Doesn’t he sound like a 3600 examiner though? All conclusion, no substance?

  96. B October 3, 2018 9:28 pm

    @AlexO “I talked to both the Examiner and SPE; they said (in a nutshell) that business methods are not a patentable subject matter.”

    Hahaha, perhaps they should read Bilski and State Street.

  97. litig8or October 3, 2018 9:41 pm

    B-

    For some weird reason you continue with ad hominem attacks, highlighting the misery of your life and showing what a poor attorney you must be. Go back to the Doctor Pepper and Cheetos and put the blog away for a while.

  98. B October 3, 2018 10:05 pm

    @litig8or “For some weird reason you continue with ad hominem attacks. . . .”

    If calling you ignorant of law any 1L should know, then yes, I’m guilty of ad hominem attacks. As it is you can’t convince me you’re a lawyer.

  99. litig8or October 3, 2018 10:14 pm

    B are you this “Bud” assclown that bragged about writing a losing amicus brief? I looked on pacer and saw that the court dinged you a few times for not being able to file the brief according to the court’s rules. Eventually you figured it out. I read the brief and laughed out loud at how poorly it is written and how ineffective your arguments are. Stick to drafting lame patents you loser.

  100. B October 3, 2018 11:04 pm

    @ litig8or “B are you this “Bud” assclown that bragged about writing a losing amicus brief?”

    Hahahaha, nothing like a whiner accusing me of making ad hom attacks go for the gutter so fast. Seriously, stick to faking law.

  101. concerned October 4, 2018 4:22 am

    I think I know the identity of Litig8or. He appears to be an attorney; however, the firm does not practice patent law. Litig8or: Is your first name a chapter of the Bible?

    I went to dinner last night with two friends and showed them the law, 35, s101. They both read the law and I asked them to find the words “abstract”, “significantly more” and “generic computer.” Of course, my friends could not find any of those words. Then they asked me “Who were those 9 SCOTUS judges that decided Alice?” Honestly, I was asked that question about what the court’s legal reason would be to go so far off base of the law and re-write the same.

    As common people, all 3 of us find it disgusting that any judge, or group of judges, would empower themselves to be above the law and re-write it with their own opinion under the premise that is an interpretation of said law.

    Litig8or: That SCOTUS interpretation probably benefited some of your firm’s business clients that infringed on inventor’s patents. The preceding is probably why you have your opinion as it is a green light business opportunity for your clients to steal ideas with the blessing of legal cover. All kinds of reasons were given during the sub-prime mortgage scam as to why it was alright to over-inflate appraisals and over-state income to scam pension funds and other investors. Likewise, the same kind of reasoning is given in patent prosecutions to somehow justify a re-write of s101 without the involvement of Congress.

    Whether it is investors or inventors, a scam cannot last forever. And when it ends, and certainly this patent troll scam will end, everyone has to remember what side of the fence they were on.

    AlexO beware of who you take advice.

  102. Night Writer October 4, 2018 7:20 am

    @litig8or

    At this point, I’d say that litig8or is a troll. He does not respond to substantive responses and merely makes high-level accusations and conclusions. He is on here to disrupt.

    litig8or isn’t even very good at it. Definitely a lightweight.

  103. Night Writer October 4, 2018 7:23 am

    You have to wonder too whether litig8or is being paid to be disruptive. He/she has the feel of a person that is paid to push an agenda. Maybe not being paid to post on the blog, but being paid by his/her masters in SV to push an anti-patent agenda to Congress.

  104. Anon October 4, 2018 10:22 am

    There is one other person in the blogosphere that operates by being vacuous, avoiding any critical thinking on the underlying substantive points (while celebrating an Ends reached by the courts), engages in Accuse Others memes, and uses “Cheetos” in an insult.

    Perhaps not the same person (and in truth, I really do not care), but the same tendencies yield the same absence of persuasiveness.

  105. B October 4, 2018 11:16 am

    @ anon “There is one other person in the blogosphere that operates by being . . .”

    Fully plausible. Same belief in self-expertise with ungodly ignorant statements.

  106. litig8or October 4, 2018 11:19 am

    I claim:

    A method for drafting worthless patent claims, the method comprising hiring a guy named “Bud,” having the claims rejected, and then whining that patent examiners and judges that don’t like my patent claims are “retarded”

    Claim 2: performing the method of claim 1 on a computer configured to waste money.

  107. Concerned October 4, 2018 12:41 pm

    Litig8or:

    A lot of people are concerned about patent prosecution to include the Director, USPTO.

    Your law firm does not specialize in patents. Commence, real estate, probate etc. But not patents.

  108. litig8or October 4, 2018 12:51 pm

    To all of you that think the Supreme Court cannot interpret Section 101 as prohibiting the parenting of abstract ideas, laws of nature, or math, do you also refuse to accept the legitimacy of the concept of obviousness type double parenting? That is also not literally in any statute. How about inequitable conduct? These things have been around for many years. Congress is aware of them and hasn’t said (via new legislation) that these concepts are against the Patent Act. And since you love Congress sooooo much, you should love IPRs, created by Congress as a cheaper way to knock down bad patents. If you guys hate patent law so much, why don’t you sell vinyl siding or do something useful?

  109. B October 4, 2018 1:05 pm

    @ litig8or “To all of you that think the Supreme Court cannot interpret Section 101 as prohibiting the parenting of abstract ideas, . . . “

    Earth to whoever: no one said the courts can’t interpret statutory language or fill in the statutory gaps. Your straw man argument = fail.

    All of us are saying the courts don’t have the authority to write or rewrite the patent statutes.

  110. anon October 4, 2018 1:23 pm

    B,

    Clearly, litig8or is either disingenuously ignoring that difference or in ignorance unbefitting an actual attorney cannot understand that difference.

    Your point sounds in my point: the score board is broken.

    Litig8or only want to scream out the score from the broken scoreboard. He has now – just as his previous excursion here – simply refused to address the larger and more critical issues.

  111. litig8or October 4, 2018 1:27 pm

    B,

    You won me over. What this country clearly needs are way more business method patents performed “on a computer” or “on the internet”. Because how can we have an economy without these awesome patents?

  112. Concerned October 4, 2018 2:56 pm

    The business method still has to be novel and non-obvious= What the law says, not opinions. So yes, a business method that is new and useful, novel and non-obvious is a patent. So says the law.

    Litig8or is a lawyer in a firm that probably has efficient infringers.

    His firm does not specialize in patents per their website.

  113. Night Writer October 4, 2018 4:05 pm

    @112 Concerned

    >>His firm does not specialize in patents per their website.

    What website? Who is he?

  114. Concerned October 4, 2018 4:11 pm

    Sorry Night Writer, I will not reveal his name without his permission. But he is an attorney.

  115. Anon October 4, 2018 5:51 pm

    litig8or @ 111,

    More evidence that your preformed suppositions are simply ignorant of the larger issues at play.

    There is not – and never has been – any type of “must have” patents for anything (let alone your attempts to denigrate business method patents or computing patents) in order to have a patent system.

    Whether or not anything passes your “sniff” test as to being awesome (let alone needed) is of zero consequence.

    That you type — even in jest — otherwise is more telling than I think that you realize.

  116. litig8or October 4, 2018 5:57 pm

    Anon,

    I think I’ve had enough on this thread, save one last remark. I get that you don’t like Alice and the hundreds of other decisions regarding the scope of section 101. But since you’re not a judge your opinion isn’t important. If you are a practicing attorney or patent agent you would be better served by confirming your practice to what the law IS and not what you want it to be.

    The corollary is that my opinion is equally not important. There’s plenty of cases where I don’t like the outcome or how something was interpreted. That’s life.

    Good day.

  117. Concerned October 4, 2018 7:11 pm

    Sad thing Litig8or, the USPTO does not seem to know exactly what is the law.

    SCOTUS decides Alice and up to 90% of previously granted patents issued from USPTO gets invalidated upon reconsideration. How can that be?

    Either the USPTO is totally incompetent or SCOTUS re-wrote the law in deciding Alice. BTW my examiner told me 3 times my business method had patentability in a telephone interview then I get rejected again.

    The laws of our land are by 535 members of Congress, our representatives, not 9 judges.

    And since opinions rule the day, not black letter law, nobody really has any certainty even if the examiner thinks you should get the patent.

    Society did not gain a thing by SCOTUS compromising a very basic tenent to “so call” fix patent law. Let Congress pass the 2 step Alice rule and those judicial expectations if it must be or it is so proper. Do it right by the right authority of the land.

  118. Anon October 5, 2018 7:25 am

    Litig8or,

    In your haste to flee from this thread (before you engage on any of the points that I put to you), you wish to part with a statement that only exemplifies your lack of awareness of the responsibility of a sworn attorney.

    For if you were a sworn attorney, you would recognize that your statement of “But since you’re not a judge your opinion isn’t important.” runs into the brick wall of WHY you have ethical obligations in your oath.

    This in top of your dissembling in that you wish to paint my posts as somehow only being “opinion.”

    You continue to show that you simply have WAY too high of an opinion of yourself and your desired Ends justify the Means approach to the larger issues of which us “bottom feeders” pursue (and which we pursue because we LOVE — not hate — patent law, and we recognize how the Court is mashing that which we love).

    Your attempts at spin, even if done more politely on this forum than may be done (by you or others) on other forums, are simply not effective. I get the sense that you think it “clever” to engage in such “Accuse Others” rhetoric, but it is not. All that you do is show how shallow your thinking is. I suggest that you spend more time contemplating the substance of the larger issues and less time trying to be rhetorically “witty.”

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